Ex parte SCHWARZ - Page 5




          Appeal No. 1998-3281                                                        
          Application 08/650,500                                                      


               Alternatively, the polymer in claim 22 may be polymer (b)              
          which is defined by a backbone R as in polymer (a) but the                  
          backbone is itself defined by a particular structure recited in             
          claim 22 and is a four carbon, linear, saturated chain having a             
          carboxylic acid moiety attached to the number 2 carbon in the               
          chain.  In the formula depicting R in polymer (b), C is not a               
          hydrophobic saturated alkyl group having at least about 6 carbon            
          atoms bonded in a linear chain but is, indeed, carbon.  A first             
          substituent A on the (b) polymer is defined as a "hydrophobic               
          group having at least about 6 atoms bonded in a linear chain."              
          A second substituent B (not boron) is defined as a "hydrophilic             
          group containing at least about 9 atoms bonded in a linear                  
          chain."  The subscript n in polymer (b) is an integer                       
          representing the number of repeating monomer units in polymer               
          (b).                                                                        
               Reading this claim standing alone, we agree with the                   
          examiner's conclusion that it is of considerable scope.  However,           
          this, in and of itself, is not a basis for rejection. U.S. Steel            
          Corp. v. Phillips Petroleum Co., 865 F.2d 1247, 1251, 9 USPQ2d              















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